Volume 94, Issue 2

  • Betty Boop Almost Lost Her Bling-Bling: Fleischer Studios v. A.V.E.L.A. and The Re Emergence of Aesthetic Functionality in Trademark Merchandising Cases — Tracy Reilly
  • The Effect of the Leahy-Smith America Invents Act on Collaborative Research — N. Scott Pierce
  • Challenging Validity of Issued Patents Before the PTO: Inter Partes Reexam now or Inter Partes Review Later? — Andrei Iancu, Ben Haber, Elizabeth Iglesias
  • A Unitary Patent and Unified Patent Court for the European Union: An Analysis of Europes Long Standing Attempt to Create a Supranational Patent System — Kevin P. Mahne
  • Multinational Enforcement of Patent Rights: National Jurisdiction Over Infringement and Validity of a Foreign Patent — Arthur O. Hall
Betty Boop Almost Lost Her “Bling-Bling”:Fleischer Studios v. A.V.E.L.A. and The Re-Emergence of Aesthetic Functionality in Trademark Merchandising Cases  

By: Tracy Reilly
This article analyzes the original Ninth Circuit opinion in Fleisher Studios, Inc. v. A.V.E.L.A., Inc. in which the court provided a sua sponte discussion of the dispraised doctrine of aesthetic functionality in the context of the contemporary merchandising practices of trademark owners, which analysis was subsequently withdrawn in its entirety by the court six months later when it substituted its former opinion with a new holding on grounds other than aesthetic functionality. The article will begin with an explanation and history of the Lanham Trademark Act, focusing on its twin goals of protection against consumer confusion over the source of goods in the marketplace, as well as the promise offered to producers of goods to secure the goodwill associated with such products.
It will then explore the history and development of trademark licensing, particularly focusing on the contemporary phenomenon of brand evolution or trademark merchandising, which caters to the fulfillment of consumer connection, affiliation, and overall “experience” with valued materialistic commodities, which I term the “bling-bling” factor. The article will then trace the history of court opinions that have interpreted aesthetic functionality and other provisions in the Lanham Act in conjunction with the evolving practice of trademark licensing, particularly critiquing the first Fleisher Studios opinion for reinstating the doctrine and arguing that it: (1) fails to account for protecting the needs of contemporary consumption; (2) thwarts the incentive of trademark owners to develop goodwill in branding practices; and (3) discounts to an unacceptable degree the phenomenon of rampant, unauthorized third-party use of marks by neglecting to distinguish a competitor from a free rider in the marketplace.
Finally, the article will conclude with a plea to all circuits and the Supreme Court to extinguish the aesthetic functionality doctrine by showing that it is not a rational extension of the traditional principle of utilitarian functionality originally conceived by the drafters of the Lanham Act.
The Effect of the Leahy-Smith America Invents Act on Collaborative Research  

By: N. Scott Pierce
Requirement under subsection 102(f) of Title 35 of the United States Code that a person “himself invent the subject matter sought to be patented” has been removed by the Leahy-Smith American Invents Act (AIA) of 2011. At least one commentator proposes amending the new Act to add back this provision in order to prevent unauthorized copiers from patenting obvious variants of non-public inventions derived from an original inventor. However, judicial precedent prior to OddzOn Prods., Inc. v. Just Toys, Inc. generally does not sanction obviousness considerations under subsection 102(f). If a provision equivalent to subsection 102(f) is incorporated into the AIA that does block obvious variants of derived subject matter, then the Act should also be amended to provide that subject matter that qualifies only under that provision should not be prior art to a claimed invention if, by the effective date of the claimed invention, it is owned by the same person, subject to a common obligation of assignment, or subject to a joint research agreement.
Challenging Validity of Issued Patents Before the PTO: Inter Partes Reexam now or Inter Partes Review Later?  

By: Andrei Iancu, Ben Haber, Elizabeth Iglesias 

On September 16, 2011, President Obama signed the America Invents Act (“AIA”) into law.  One of the major changes was the creation of new procedures for challenging the validity of an issued patent before the United States Patent and Trademark Office (“PTO”). One of these new provisions, Inter Partes Review (“IPR”) is set to completely replace the Inter Partes Reexamination (“Reexam”) procedure that is currently in use. While the AIA mapped out the skeletal framework of these newly created procedures, including IPR, the AIA also mandated that the PTO conduct rulemaking to flesh out the rest of the proceedings. On February 9th and 10th, 2012, the PTO issued several proposed rules packages.  The new IPR procedures contemplated by the PTO’s proposed rules are more “trial-like” than prior Reexam practice at the PTO. For example, current Reexam is conducted in an amendment-and-response format, similar to primary patent examination. The new AIA procedures on the other hand, also call for limited discovery, including deposition of declarants and affiants, a hearing, and oversight by Administrative Patent Judges of the Patent Trial and Appeals Board (“PTAB” or “the Board”). IPRs will not be available until the end of this year. This leaves a question open to patent practitioners who would like to challenge the validity of an issued patent before the PTO in an inter partes setting: is it better to wait for the new IPR provisions to come into effect, or file a Reexam under the current rules before they are gone?
A Unitary Patent and Unified Patent Court for the European Union: An Analysis of Europe’s Long Standing Attempt to Create a Supranational Patent System 

By: Kevin P. Mahne
There is widespread awareness by European leaders that the fragmented European patent system has negatively impacted “innovation, growth and the competitiveness of European business.” To compete in the information based global economy, the European market requires a patent system that is on par withthe patent systems in Japan and the United States.  For over forty-years European countries have held numerous conferences and signed several international agreements aimed at either creating a unitary patent which would be valid in all European countries upon issuance or establishing a specialized European court with jurisdiction over patents. While the European Patent Organization “EP Organization,” established by the European Patent Convention (EPC), was a significant milestone toward the creation of a supranational patent system for Europe, other attempts by European countries to reach an agreement which would resolve the problems that are inherent in the European fragmented patent system have failed.  The disadvantages of the fragmented European patent system include the high cost of securing a patent in multiple European countries, the likelihood of infringement and revocation proceedings in numerous national courts, the possibility of different interpretations of European patent law by national courts, and the cost of renewal fees in each European country where patent protection is desired.  Since 1999, the European Commission has been working tirelessly to establish a European supranational patent system.
The European Commission has continued to work toward a European patent system and the EU is now on the verge of establishing unitary patent protection which will be automatically enforceable in twenty-five EU Member States upon patent issuance. These same twenty-five EU Member States are also close to finalizing an agreement for the creation of the Unified Patent Court. The European Commission has tendered two proposals to advance the European patent system within the EU. The first proposal is the draft EU Unitary Patent regulation that will provide unitary patent protection upon patent issuance in twenty-five participating EU Member States. The draft regulation  implements EU enhanced cooperation procedures allowing fewer than all EU Member States to pass an EU regulation. The second proposal is a modified draft agreement on the Unified Patent Court and draft statute which includes the amendments necessary to ensure compliance with EU treaties and a  Court of Justice of the European Union “CJEU”)March 8, 2011 opinion which had blocked the advancement of the European Supranational patent system.
Multinational Enforcement of Patent Rights: National Jurisdiction Over Infringement and Validity of a Foreign Patent  

By: Arthur O. Hall 

This article addresses whether or not the right holder has the ability to adjudicate their patent rights in foreign patents in any country other than the country where the patent rights were granted. The article addresses that issue with respect to the United States (US), the States of Europe under the European Patent Convention (EPC) and Japan, and multinational enforcement of patent rights, similarly referred to as multinational patent litigation.

The litigation issues of the article are centered on national jurisdiction over infringement and validity of a foreign patent, using the US, the States of Europe under the EPC and Japan as a measure for determining the feasibility and scope of litigation on a multinational scale.  They are examined in order to determine a reasonable scope of the substantive rights of the patent holder, if any, to enforce his foreign granted patent rights in other countries against defendants in countries other than the country in which the patent rights were granted.

The article also recommends substantive guidelines for enforcing these patent rights internationally. These guidelines are expanded from the European Patent Litigation Agreement (EPLA) currently in an approval process. The further step would be to evaluate the possibility of achieving jurisdiction of the courts, normally out of reach, to review  Patent cases for patents granted in foreign countries.

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